UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`16/782,530
`
`02/05/2020
`
`Sally Elizabeth RUSSELL
`
`SYG-0364PA(115479.000294)
`
`4118
`
`153842
`BakerHostetler
`
`7590
`
`04/05/2021
`
`Washington Square, Suite 1100
`Washington, DC 20036-5304
`
`EXAMINER
`
`SONG, JIANFENG
`
`ART UNIT
`
`1613
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`04/05/2021
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`eofficemonitor @bakerlaw.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Application No.
`Applicant(s)
`16/782,530
`RUSSELL etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`JIANFENG SONG, Ph.D.
`1613
`Yes
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133}.
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`
`
`1) Responsive to communication(s) filed on 03/26/2021.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)¥) This action is FINAL.
`2b) (J This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-21 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) 8-12 and 15-21 is/are withdrawn from consideration.
`() Claim(s)__ is/are allowed.
`Claim(s) 1-7 and 13-14 is/are rejected.
`1 Claim(s)__ is/are objected to.
`C] Claim(s)
`are subjectto restriction and/or election requirement
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)() The drawing(s) filedon__ is/are: a)C) accepted or b)C) objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`cc) None ofthe:
`b)L) Some**
`a)D) All
`1.1) Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have beenreceived in Application No.
`3.2.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) ([] Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 03/26/2021.
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20210331
`
`

`

`Application/Control Number: 16/782,530
`Art Unit: 1613
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA or AIA Status
`
`The present application, filed on or after March 16, 2013,
`
`is being examined
`
`under the first inventor to file provisions of the AIA.
`
`Withdrawn Rejections:
`
`Applicant's amendments and arguments filed on 03/26/2021 are acknowledged
`
`and have been fully considered. The Examiner has re-weighed all the evidence of
`
`record. Any rejection and/or objection not specifically addressed below is herein
`
`withdrawn.
`
`The following rejections and/or objections are either reiterated or newly
`
`applied. They constitute the complete set of rejections and/or objections presently
`
`being applied to the instant application.
`
`Applicants elect compound of 1.1 as specific compound A, compound 2.1 as
`
`specific compound B, pretilachlor as specific compound C and benoxacor as specific
`
`safener. Compound 2.1 is free of art and the examination moves to next species
`
`(compound BE) at the next species at the choice of the examiner.
`
`
`
`Compound BE
`
`

`

`Application/Control Number: 16/782,530
`Art Unit: 1613
`
`Page 3
`
`Claims 1-7 and 13-14 read on the elected species and are under examination,
`
`claims 8-12 do not read on the elected species and are withdrawn from consideration.
`
`Claims 1-21 are pending, claims 1-7 and 13-14 are under examination.
`
`Information Disclosure Statement
`
`The information disclosure statement (IDS) submitted on 03/26/2021 is being
`
`considered by the examiner.
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103 which forms the basisforall
`
`obviousness rejections set forth in this Office action:
`
`A patent for a claimed invention maynotbe obtained, notwithstanding thatthe claimed
`invention is not identicallydisclosed as set forth insection 102 ofthis title, if the differences
`between the claimed invention and the prior art are such that the claimed invention as a whole
`would have been obvious beforethe effective filing date of the claimed invention to a person
`having ordinaryskill in the art to which the claimed invention pertains. Pate ntabilitys hall not
`be negated by the manner in whichthe invention was made.
`
`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
`
`USPQ 459 (1966), that are applied for establishing a background for determining
`
`obviousness under 35 U.S.C. 103 are summarized asfollows:
`
`Pon>
`
`Determining the scope and contents of the prior art.
`Ascertaining the differences between the prior art and the claims at issue.
`Resolving the level of ordinary skill in the pertinent art.
`Considering objective evidence present in the application indicating
`obviousness or nonobviousness.
`
`Claims 1-7 and 13-14 are rejected under 35 U.S.C. 103 as being
`
`unpatentable over Phadte et al. (WO2015052076) in view of Satterfield et al.
`
`(W0O2015084796).
`
`

`

`Application/Control Number: 16/782,530
`Art Unit: 1613
`
`Page 4
`
`Determination of the scope and contentof the prior art
`
`(MPEP 2141.01)
`
`Phadte et al.
`
`teaches pyrrolone compounds of formula (I) in herbicidal
`
`composition and methods of using these compoundsto control plant growth (abstract).
`
`The compounds of formula (I) according to the invention can also be used in
`
`combination, with other active ingredients, e.g. other herbicides, and/or insecticides,
`
`and/or acaricides, and/or nematocides, and/or molluscicides, and/or fungicides, and/or
`
`plant growth regulators. Such mixtures, and the use of such mixtures to control weeds
`
`and/or undesired plant growth, form yet further aspects of the invention (page 26, line
`
`24-28). The combination of compound of formula (I) and pretilachlor (page 30, line 1),
`
`and the combination of compound of formula (I) and benoxacor (page 33, line 34). A
`
`specific compoundof formula (I) A8 is prepared (page 62), the same as compound of
`
`1.1 in applicant’s claim 1.
`
`eeSS
`
`O
`
`NJ
`
`oH
`
`" NyN
`
`:
`
`f
`
`°
`
`Deeeeceeeteenentedetenteenenenteenneeeenenneteeneeneneneeeeneneeeedee
`
`

`

`Application/Control Number: 16/782,530
`Art Unit: 1613
`
`Page 5
`
`Satterfield et al. teaches a compoundof formula | includingall
`
`stereoisomer and the composition compositions containing the compounds of
`
`Formula 1 and methods for controlling undesired vegetation comprising contacting the
`
`undesired vegetation or its environment with an effective amount of a compound or a
`
`composition of the invention (abstract). A compound in Table 1 (page 49) with Q! =
`
`Pyrazol-3-yl(1-CH2CF3, 4-F) (page 94, right column). This is the same compoundof
`
`examining species of compound BE.
`
`
`
`YlisO: ¥? is O: R2 is WH, RY is H: Riis H; O° is Pl2-Fy; and Q!is
`
`Ascertainment of the difference between the prior art and the claims
`
`(MPEP 2141.02)
`
`The difference between the instant application and Phadte etal.
`
`is that Phadte
`
`etal.
`
`do not expressly teach compound B. This deficiency in Phadte etal.
`
`is cured
`
`by the teachings of Satterfield etal.
`
`Finding of prima facie obviousness
`
`Rational and Motivation (MPEP 2142-2143)
`
`

`

`Application/Control Number: 16/782,530
`Art Unit: 1613
`
`Page 6
`
`It would have been obvious to one of ordinary skill in the art before the effective
`
`filing date of the claimed invention to include compound BE, as suggested by
`
`Satterfield et al., and produce the instant invention.
`
`Oneof ordinary skill in the art would have been motivated to include compound
`
`BE in the herbicidal composition of Phadte et al. because compound BE is a suitable
`
`herbicidal compoundin the herbicidal composition. MPEP 2144.07 states, The selection
`
`of a known material based on its suilablity for iis intended use supported a prima facie
`
`obviousness determination in Sinclair & Carroli Co. v. interchermcal Coro., 325 US.
`
`327, 85 USPO 297 (1945). Since Phadte et al teaches including additional herbicidal
`
`compound, Satterfield et al. teaches compound BE asherbicidal compound, it is
`
`obvious for one of ordinary skill in the art to include compound BE in the herbicidal
`
`composition of Phadte et al. and produce instant claimed invention with reasonable
`
`expectation of success.
`
`In light of the forgoing discussion, the Examiner concludes that the subject matter
`
`defined by the instant claims would have been obvious within the meaning of 35 USC
`
`103.
`
`From the teachings of the references, it is apparent that one of ordinary skill in
`
`the art would have had a reasonable expectation of success in producing the claimed
`
`invention. Therefore, the invention as a whole was prima facie obvious to one of
`
`ordinary skill
`
`in the art before the effective filing date of the claimed invention, as
`
`evidenced by the references, especially in the absence of evidence to the contrary.
`
`

`

`Application/Control Number: 16/782,530
`Art Unit: 1613
`
`Responseto argument:
`
`Page 7
`
`Applicants argue that Compound BE is a prophetic compoundin Satterfield.
`
`Satterfield synthesizes and tests approximately 350 compounds. A vast majority of the
`
`tested compoundsinclude phenyls rather than heterocycles. Out of the vast majority of
`
`compounds, Satterfield identifies compounds 191, 192, 253, 254, 298, 299, and 300, as
`
`containing pyrazoles at Q1. First, none of these compounds appearto bedi- ortri-
`
`substituted, only, mono-substituted with methyl or CH2CF3. Second, the data provided
`
`for these compounds appears to suggest that the pyrazoles are some of the worst
`
`performersin the disclosed biological tests. Based on the data in Satterfield, a person of
`
`ordinary skill
`
`in the art would not be motivated to use compoundswith pyrazoles at Q1
`
`with a reasonable expectation of success as the data associated with these compounds
`
`teaches away. For instance, Applicant provides the following extracts (with boxes
`
`around the pyrazole compounds)from the corresponding, issued, U.S. national stage of
`
`Satterfield, U.S. Patent 10,294,202. Asillustrated by this data, certain pyrazoles did not
`
`show activity at even 1000 g/ha-the highest level tested. A person of ordinary skill in the
`
`art would not be motivated to use pyrazoles at the Q1 of the compoundsof formula 1
`
`in
`
`Satterfield based on this data. This data teaches away.
`
`In response to this argument: This is not persuasive. Applicant’s argumentare not
`
`sufficient to overcome the 103 rejections at least for the following reasons. Firstly, the
`
`data of compounds 191, 192, 253, 254, 298, 299, and 300 are notsufficient to establish
`
`a conclusion that all compounds with pyrazoles at Q1 are worst performer because
`
`compounds 191, 192, 253, 254, 298, 299, and 300 are not representative of a genus of
`
`numerous compounds with pyrazoles at Q1 with different substituents at pyrazole.
`
`

`

`Application/Control Number: 16/782,530
`Art Unit: 1613
`
`Page 8
`
`According to the Q1 structure of compounds 191 (pyrazol-3-yl (1-Me)), 192 (pyrazol-3-yl
`
`(1-Me)), 253 (pyrazol-4-yl (1-Me)), 254 (pyrazol-4-yl (1-Me)), each of 298, 299, and 300
`
`has (pyrazol-4-yl (1-CH2CFs3)), these seven compound with only monosubstituent of
`
`Methyl or CH2CFs3 do not even represents a genus of numerous compounds with
`
`pyrazoles at Q1 with mono substituent, and it can not simply be used to predict the
`
`activity of compounds with pyrazoles at Q1 with di or tri substituents suchas the
`
`examining compound BE with Q' = Pyrazol-3-yl(1-CH2CF3, 4-F). Therefore, this can be
`
`considered as teaching away. Secondly, since prior art teaches compoundof BE, there
`
`is no requirementfor this compound being synthesized to be relied on in 103 rejection
`
`because teaching is notlimited to working example.
`
`It is well settled, however, that the
`
`teachings of a reference are notlimited to the working examples. See in re Milis and
`
`Pairner, 470 F.2d 649 (CCPA 1972) ("[A] referenceis not limited to the disclosure of
`
`specific working examples."),
`
`In re Chapman and Cosby, 357 F.2d 418, (CCPA 1966)
`
`("A reference can be usedforall it realistically teaches, and is not limited to the
`
`disclosuresin its specific illustrative examples."), and In re Widmer, Baitzer and Nikles,
`
`353 F2d 752 (CCPA 1965) ("Examples in a reference are merely that, exemplary of the
`
`broader disclosure, all of which is available for what it clearly teaches."). Therefore, the
`
`103 rejection is still proper.
`
`Applicants argue that In addition, as indicated by the IDS submitted October 14,
`
`2020, Applicant has successfully instituted a PGR on the '202 patent. For the
`
`convenience of the Examiner, Applicant submits additional material from the PGR in an
`
`IDS. Applicant notes public filings (including exhibits) related to the '202 PGR may be
`
`

`

`Application/Control Number: 16/782,530
`Art Unit: 1613
`
`found at: https://developer.uspto.gov/ptab
`
`Page 9
`
`w/#/search/documents ?proceedingNumbeF'P GR2020-00028.
`
`In response to this argument: This is not persuasive. “|Alppellants have the
`
`burden of exglaining the data in any declaration they proffer as evidence af non-
`
`obviousness.” Ex parte ishizaka, 24 USPQed 1621, 1624 (Bd. Pat. Aon. & Inter. 1992).
`
`It is unclear how the cited PGR provides evidences of nonobviousness. Since
`
`applicants failed to meet their burden to explain how the cited PGR provides evidences
`
`of nonobviousness, the 103 rejection is still proper.
`
`MPEP 2141 Ill states: “The proper analysis is whether the claimed invention
`
`would have been obvious to one of ordinary skill
`
`in the art after consideration ofall the
`
`facts.” Respectfully, after weighing all the evidence, the Examiner has reached a
`
`determination that the instant claims are not patentable in view of the preponderance of
`
`evidence and consideration of all the facts which is more convincing than the evidence
`
`which has been offered in opposition toit.
`
`Double Patenting
`
`The nonstatutory double patenting rejection is based on a judicially created
`
`doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the
`
`unjustified or improper timewise extension of the “right to exclude” granted by a patent
`
`and to prevent possible harassment by multiple assignees. A nonstatutory double
`
`patenting rejection is appropriate where the conflicting claims are not identical, but at
`
`least one examined application claim is not patentably distinct from the reference
`
`

`

`Application/Control Number: 16/782,530
`Art Unit: 1613
`
`Page 10
`
`claim(s) because the examined application claim is either anticipated by, or would have
`
`been obvious over, the reference claim(s). See, e.g.,
`
`In re Berg, 140 F.3d 1428, 46
`
`USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed.
`
`Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985);
`
`In re Van Ornum,
`
`686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619
`
`(CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
`
`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d)
`
`may be used to overcome an actual or provisional rejection based on nonstatutory
`
`double patenting provided the reference application or patent either is shown to be
`
`commonly owned with the examined application, or claims an invention made as a
`
`result of activities undertaken within the scope of a joint research agreement. See
`
`MPEP § 717.02 for applications subject to examination under the first inventor to file
`
`provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq.for
`
`applications not subject to examination underthe first inventor to file provisions of the
`
`AlA. A terminal disclaimer must be signed in compliance with 37 CFR 1.321 (b).
`
`The USPTO Internet website contains terminal disclaimer forms which may be
`
`used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application
`
`in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26,
`
`PTO/AIA/25, or PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may
`
`be filled out completely online using web-screens. An eTerminal Disclaimer that meets
`
`all requirements is auto-processed and approved immediately upon submission. For
`
`more information about eTerminal Disclaimers, refer to
`
`www.uspto.gov/patents/process/file/efs/guidance/eTD-info-|.jsp.
`
`

`

`Application/Control Number: 16/782,530
`Art Unit: 1613
`
`Page 11
`
`Claims 1-7 and 13-14 are provisionally rejected on the ground of nonstatutory
`
`double patenting as being unpatentable over claims 1-8 of copending Application No.
`
`16222900 in view of Phadte etal. (WO2015052076) and Satterfield etal.
`
`(WO2015084796). The reference application teaches compound A, but not compound
`
`B, compound C and softener; in view of Phadte et al. teaching compound C and
`
`softener; Satterfield et al. teaching compoundB; it is obvious for one ordinary skill in the
`
`art to include compound B, C and softener and produce instant claimed invention with
`
`reasonable expectation of success.
`
`This is a provisional nonstatutory double patenting rejection.
`
`Claims 1-7 and 13-14 are provisionally rejected on the ground of nonstatutory
`
`double patenting as being unpatentable over claims 1-38 of copending Application No.
`
`16340115 in view of Phadte etal. (WO2015052076) and Satterfield etal.
`
`(WO2015084796). The reference application teaches compound A, as well as formula
`
`(Il} encompassing compound B but not expressly compound B, none of compound C
`
`and softener; in view of Phadte et al. teaching compound C and softener; Satterfield et
`
`al. teaching compound B; it is obvious for one ordinary skill in the art to include
`
`compoundB, C and softener and produce instant claimed invention with reasonable
`
`expectation of success.
`
`This is a provisional nonstatutory double patenting rejection.
`
`Claims 1-7 and 13-14 are provisionally rejected on the ground of nonstatutory
`
`double patenting as being unpatentable over claims 1-38 of copending Application No.
`
`

`

`Application/Control Number: 16/782,530
`Art Unit: 1613
`
`Page 12
`
`16340126 in view of Phadte etal. (WO2015052076) and Satterfield etal.
`
`(WO2015084796). The reference application teaches compound A, as well as formula
`
`(Il) encompassing compound B but not expressly compound B, none of compound C
`
`and softener; in view of Phadte et al. teaching compound C and softener; Satterfield et
`
`al. teaching compound B; it is obvious for one ordinary skill in the art to include
`
`compoundB, C and softener and produce instant claimed invention with reasonable
`
`expectation of success.
`
`This is a provisional nonstatutory double patenting rejection.
`
`Response to argument:
`
`Applicants argue the same as 103 rejections.
`
`In response to this argument: this is not persuasive. Since applicant's argument
`
`is not sufficient to overcome the 103 rejection, the same argumentis not sufficient to
`
`overcome the ODP rejection, either.
`
`Conclusion
`
`No claim is allowed.
`
`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
`
`policy as set forth in 37 CFR 1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE
`
`MONTHSfrom the mailing date of this action.
`
`In the event a first reply is filed within
`
`TWO MONTHSof the mailing date of this final action and the advisory action is not
`
`mailed until after the end of the THREE-MONTH shortened statutory period, then the
`
`

`

`Application/Control Number: 16/782,530
`Art Unit: 1613
`
`Page 13
`
`shortened statutory period will expire on the date the advisory action is mailed, and any
`
`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
`
`the advisory action.
`
`In no event, however, will the statutory period for reply expire later
`
`than SIX MONTHSfrom the mailing date of this final action.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to JANFENG SONG, Ph.D. whose telephone numberis
`
`(571)270-1978. The examiner can normally be reached on MF 8-5.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http:/Awww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Brian-Yong Kwon can be reached on (571)272-0581. The fax phone
`
`number for the organization where this application or proceeding is assigned is 571-
`
`273-8300.
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see https://ppair-
`
`my.uspto.gov/pair/PrivateP air. Should you have questions on access to the Private
`
`PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
`
`

`

`Application/Control Number: 16/782,530
`Art Unit: 1613
`
`Page 14
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`If you would like assistance from a USPTO Customer Service Representative or access
`
`to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-
`
`272-1000.
`
`/JIANFENG SONG/
`Primary Examiner, Art Unit 1613
`
`